Yesterday, the Federal Circuit opinion in In re Giacomini expanded the scope of prior art available under 35 U.S.C. § 102(e).
Giacomini filed a patent application November 29, 2000. Certain claims of the application were rejected under U.S. Patent No. 7,039,683 filed December 29, 2000. The ’683 patent claimed priority to a provisional application filed September 25, 2000.
The Federal Circuit sought to interpret § 102(e) which states (emphasis in the court’s opinion):
[A] person shall be entitled to a patent unless . . . the invention was described in . . . (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.
The court turned to § 111(d) of the Patent Act to determine that the provisions of the Act apply to provisional applications unless otherwise provided. Since § 102(e) does not appear to preclude provisional applications, the plain language of the statute suggests that it applies to provisional applications.
The court noted that a patent that simply claims priority to a provisional application is not entitled to the provisional application’s filing date for prior art or priority purposes unless the patent is adequately disclosed and enabled by the provisional application under § 112.
The court also distinguished the case of priority to a foreign application which was deemed not to be the effective prior art date in In re Hilmer (CCPA 1966) on the grounds that the priority statute has been amended to provide for provisional applications that did not exist in 1966 and that § 102(e) applies to applications “filed in the United States.”
This opinion seems straight forward and follows from statutory interpretation. Its implications, however, are rather large. By permitting the use of provisional filing dates, it extends back by up to a year the effective filing date for prior art purposes of many patents. This greatly expands the amount of “secret prior art” available.
“Secret prior art” is prior art that the patent applicant has no ability to be aware of before filing his application. This includes patent applications that are published or that issue after an applicant’s filing date but were filed before.
Secret prior art is more of a problem when used in an obviousness rejection because again, the inventor is unaware of this information on his filing date. In most foreign jurisdictions, secret prior art is expressly excluded from use in obviousness or inventive step rejections.
Given the PTO’s current backlog, the problem of secret prior art in the US is getting worse with some applications issuing years after they are filed. They then spring up as prior art with an early filing date to defeat a number of later filed applications and patents. The Federal Circuit’s decision has now extended these dates back even further.